In today’s world, organizations develop their strategies based on careful analysis of the company’s vision, its capability and the environment in which it operates. There has been a gradual increase in the awareness in the enterprise sector in developing countries regarding the benefits of using the intellectual property (IP) rights.
It is a well known trend that a small but growing number of small and medium-sized enterprises (SMEs), who rely on new and improved products for driving their competitive strategies, are realizing the importance of the IP rights. For most SMEs, management of IP assets, especially patent management, is hindered by issues relating to cost and complexity of the patent system.
A patent application should not be filed, merely because an invention meets the criteria of patentability. Instead, an enterprise, big or small, should obtain and maintain patent protection over inventions that are or will be used for developing commercially useful technologies and products. While the cost of acquiring and maintaining patent protection may be significant, it should be noted that patent costs are generally only a small component of the total cost incurred in turning an invention into a commercially useful technology or product, and of marketing and selling it in the domestic or export markets.
A patent search is critical as it is the first step in getting a patent. As it is obvious, new inventions can prove to be great assets. However, this is particularly possible when the invention is properly protected with patents. With a view to obtain a patent, however, the new invention must satisfy certain criteria, such as novelty, obviousness (inventive-step) and industrial applicability. To determine whether the new invention is novel, a thorough search should be performed.
What is Prior Art?
Prior art, as it is generally known, includes all the information that has been made available to the public in any form. This may include prior patent publications, periodicals, research (thesis) papers, web publications, and any other information that has been made available in the public domain. To perform an effective patent search, one would have to search all relevant patents as well as other articles of significance
Importance of Patent Search
Patents are valuable and critical assets to startups and those with new inventions, and procuring a patent for such new inventions takes a lot of time, effort and money. Because there are so many resources that go into obtaining a patent, seeking patent protection without first performing prior art search is nothing but an unintelligent approach. It is well known that patents that have not been thoroughly searched prior to their filing may get invalidated if later on, a prior art shows up that teaches the new invention. Moreover, during patent litigation proceedings for patent infringement suits, a prior art invalidating the patent may jeopardise the chances of claiming damages from the infringing party.
Types of Patent Searches
Patentability / Novelty Search
A variety of searches may be performed depending upon the exact need, which primarily includes conducting a patentability search, where the goal is to identify if the invention is new and novel; which is one of the major criteria needed in applying for patent protection. A patentability search is the most common type of search that includes a search of all patents and patent publications filed with the Patent Offices across different jurisdictions. Furthermore, the patentability search also includes searching non-patent literature including: newspapers, magazines, newsletters, seminar presentations, academic journals, text books, government publications, technical manuals and/or books in print, with a view to ascertain that no close prior art exists.
With over millions of patents and printed publications worldwide, which may be potential prior-art against an invention, there is a good chance that some reference, or combination of references, may render the invention anticipated or obvious, and therefore unpatentable. A prior-art patentability search can avoid unnecessary investment in a patent application if the search discovers prior references that would likely preclude patenting the invention. Additionally, various decisions of the court worldwide have necessitated the need of a thorough patent search. For example, in US, in light of a seminal court decision referred to as “Festo” it is now practically mandatory to do extensive prior-art patentability search to ensure that a patent will have maximal scope through a critical legal mechanism known as the “Doctrine of Equivalence”.
Additionally, if an inventor expects to sell/license his invention or to enforce his patent in court, he should have an extensive prior-art patentability search done. The prior art found by such a search allows a patent practitioner to carefully draft the claims around the prior art, and more accurately decide what should be in the specification.
A validity search is conducted with the intent of finding prior art to invalidate an already existing patent. It is also referred to as an “Invalidity Search”. A thorough validity search provides patent and non-patent prior-art that the reference patent tends to read on. That is, the search report includes all the prior-art references which are within the reference patent’s broadest claim scope. Such prior-art references serve as a basis for a legal opinion against infringement or as due diligence prior to selling or licensing a patent. The search report may include a detailed graph that charts validity for a sufficient number of independent claims.
Generally, the purpose of this search is either to invalidate one or more claims of a patent or to validate the enforceability of a patent’s claims, respectively. These two searches are identical except for the desired outcome (invalid or valid patent claims) of the search.
As a standard strategy, proof of invalidity based on prior art is the first line of defense when confronted by patent infringement allegations. Conversely, this search may also be commissioned when a client is contemplating asserting, licensing, buying, or selling a patent and wants to confirm that the patent is enforceable.
In US, the results of a patent invalidity search may be utilized to try to invalidate the patent either by litigation or by filing a Request for Reexamination at the USPTO.
The patent invalidity search is generally wide-ranging and extensive because an entire patent infringement lawsuit may depend on it. Moreover, newly developed documents generally must be better than the prior art of record uncovered earlier by the Patent Examiner and hence, a patent invalidity search is an all-out attack on the patent.
However, various procedures and grounds to invalidate a patent differ according to the patent laws of different jurisdictions. However, most jurisdictions recognize grounds such as publication of the invention prior to the priority date of the application for patent, sales of the invention, prior public knowledge, or prior public use. Generally, an exhaustive prior art search will be directed at each of these separate sources of prior art.
Infringement / Clearance / Freedom-to-Operate Search
A Freedom to operate search identifies potential patent barriers to the commercialization of products or technologies. This type of search examines the claims language of third-party in-force patents and is typically conducted as due diligence to assess the risk of potential infringement.
This type of search is also known as Right to Use, or Clearance search, and includes a comprehensive Infringement search of unexpired patents. These searches also include a limited validity search of expired and unexpired patents, publications, and non patent literature. These searches also help to locate expired patents and provide relevant proof of an invention that is already in public domain.
One of the primary goals of Freedom to Operate searches is to determine if the innovation has freedom to operate in a particular jurisdiction.
Drafting a Good Quality Patent Application
Drafting a patent application is the most challenging as well as difficult part of the entire patent process. If an invention is ever infringed upon, the patent claims determine whether or not infringement has occurred. In other words, the patent claims outline the boundaries of any invention. The exact wording and phrasing chosen in the claims specifically draw out the limits of the invention.
As a standard practice, there exists a specific legal language that must be used while drafting patent claims. Generally, the claims must be clear, complete and supported by the application’s description. The aim of the patent application is to describe exactly what has been invented and the description is used to expand upon the claims.
As it is well known, each claim should have only one meaning which can be either broad or narrow, but not both at the same time. In general a narrow claim specifies more details than a broader claim. Having many claims, where each one has a different scope allows the inventor to have legal rights for several aspects of the invention.
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